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Patents > Organization > Examination Policy > MPEP Staff > 35 USC 112 ¶ 1 > Enablement Decision Tree - text version

ENABLEMENT DECISION TREE Text Version

  1. Analyze each claim as a whole.
  2. Search the prior art.
  3. Consider the undue experimentation factors with respect to the claims as a whole and the specification.
  4. Does the specification teach how to make and use at least one embodiment encompassed by the claims as a whole without undue experimentation?

    Note: If there is a working example, the answer to the question cannot be "No". The answer also cannot be "No" if the sole reason is the lack of working example.
    1. 4.1  No - Write a rejection using form paragraph 7.31.002. Give specific reasons and make sure that any relevant issues regarding the breadth of the claims relative to the guidance in the disclosure are raised. *

      4.2 Yes -

      Are the enabled embodiments representative of the full scope of the claim?

      4.2.1  Yes - No enablement rejection.

      4.2.1  No - Write a scope rejection using form paragraph 7.31.03 and/or 7.33.01. Give specific reasons why the working examples or enabled embodiments are not sufficient to enable the breadth of the claims.*

       

    *Example: If scientific technical reasons cannot be given or properly supported with sufficient evidence, then the answer to the previous question should have been "yes".

 
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